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New Edition of the Examination Guidelines for Inventiveness and Related Strategies for Applicants (2018.3.8)

WILSON CHENG

I. Overview

The new edition [1] of the Examination Guidelines for Inventiveness became effective on July 1, 2017. All patent applications examined after July 1, 2017 were examined based on this new edition. Although it is difficult to draw a clear line between inventiveness and uninventiveness for a patent application, the new edition establishes clearer standards to determine inventiveness compared to the previous edition. Based on the new edition, several measures for patent applicants are proposed to increase the possibility to convince the examiner of the inventiveness of patent applications.

II. New edition of the Examination Guidelines for Inventiveness

Article 22, Paragraph 2 of the Taiwan Patent Act stipulates that if an invention can be easily accomplished by a person having general knowledge in the art based on prior art before filing, no invention patent should be granted for such invention. Therefore, the knowledge level of a person having general knowledge in the art occupies an important position when determining inventiveness. A person having general knowledge in the art is usually a single person. However, if it is more suitable to define “a person having general knowledge in the art” as a group of people when considering the specific fact of the art of the invention to be examined, “a person having general knowledge in the art” can also be understood to mean a group of people.

When an examiner determines the difference between an invention and the prior art, he/she needs to select a single citation as the main citation and compare the claims of the invention to be examined to this main citation. The main citation is selected from citations belonging to the same technical field or addressing the same problem as the invention to be examined. The examiner may combine two or more citations to determine whether the invention to be examined is inventive. However, in this situation, whether there is an obvious motivation to combine the citations to achieve the invention in question should be considered.

When considering whether a combination of prior arts is obvious, whether there is an obvious motivation to combine the citations to achieve the invention or whether prior arts can be obviously combined without considering motivation to achieve the invention must first be considered. If there is no obvious motivation to combine the citations and the prior art references cannot be obviously combined without considering motivation, the invention possesses inventiveness. Otherwise, whether uninventiveness can be established should be considered.    

Four aspects should be evaluated when determining whether there is an obvious motivation to combine citations. These four aspects include correlation between the technical fields of the citations, commonality of problems to be solved between the citations, commonality in functions or actions between the citations, and teachings or suggestions in the citations to combine the citations.

Situations in which prior arts can obviously be combined without considering motivation include simple variations of the main citation to achieve the invention, pure aggregation of citations, and the invention being obvious to try. If an invention is a combination of features in the citations and the combined features do not functionally interact with each other such that the effects of the invention are the summation of the effects of each citation, the invention is considered to be a pure aggregation of the citations.  

If there is an obvious motivation to combine the citations to achieve the invention or the prior arts can obviously be combined without considering motivation to achieve the invention, the second decision whether uninventiveness can be established should be made. In the second decision, several aspects should be considered, including the prior art teaching away, the invention having advantageous effects, the invention having unexpected effects, the invention solving a long-standing problem, the invention overcoming technical prejudice, and commercial success.

III. Measures to convince the examiner of inventiveness of patent applications

During the examination phase of a patent application, if an examiner deems that an invention patent application does not meet the requirements of the Taiwan Patent Act, he/she should issue an Official Letter to inform the applicant of the rejection reasons for the application based on Article 46, Paragraph 2 of the Patent Act, and the specific patent agency shall notify the applicant and ask him /her to file a response within a time limit before it renders a decision in accordance with the preceding paragraph. If the rejection reasons in the Official Letter relate to inventiveness issues, the applicant may provide arguments/evidence to persuade the examiner that the application is inventive in case the applicant does not amend the claims.

The following strategies can be applied in the arguments to increase the possibility to convince the examiner of the inventiveness.

1. Defining the knowledge level of a person ordinarily skilled in the art (POSITA). The knowledge level of a POSITA establishes the threshold of an inventive step for a patent application. Because the applicant usually understands the technical features of a patent application more thoroughly than the examiner, he/she may state the knowledge level of a POSITA in his/her response to an Official Letter to provide a reference point to the examiner to guarantee an objective judgment.

2. Reciting advantageous effects. An examiner recognizes the advantageous effects of a patent application based on the statement in the specification. However, the specification may not recite all of the advantageous effects. Therefore, the applicant can recite all of the advantageous effects in a response to an Official Letter to influence in the decision of inventiveness on the condition that the advantageous effects can be inferred from the specification, claims, and drawings by a POSITA.

3. Searching instances of teaching-away in a citation. If a portion of a citation teaches away from an invention or teaches away from a combination of citations to achieve an invention, a POSITA may not easily achieve the invention based on the citation(s). Such teaching-away may serve as evidence to prove the inventiveness of the invention.

4. Reciting unexpected effects. If an invention has an unexpected effect over the prior art and the unexpected effect is caused by the technical feature of the invention, the unexpected effect can demonstrate the inventiveness of the invention. Even though prior art facilitates a POSITA to achieve an invention in view of the prior art, the invention cannot be easily achieved if the invention has an unexpected effect. 

IV.  Conclusions  

The new edition of Examination Guidelines for Inventiveness provides a clearer definition for the inventiveness of an invention. Based on the new edition, applicants can draft specifications to clearly establish the inventiveness of their inventions. In addition, applicants can utilize the advantageous guidelines in the new edition and accordingly state arguments in a response to overcome the inventiveness issue.  

[1] Patent Examination Guidelines, July 1, 2017, retrieved from https://www.tipo.gov.tw/public/Attachment/76271633447.pdf
(Last visit: February 21, 2018) 

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